DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3-5, and 9-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Publication No. 2011/0314755 to Langille et al. (“Langille”).
Regarding claim 1, Langille discloses a system used on a door in order to maintain or improve a fire rating and compliance of the door, the system comprising: a plurality of hardware components (hinges and handles, par 0037) capable of replacing an existing hardware of the door, wherein the door is capable of being restored to an original condition by removing the existing hardware, wherein at least one cutout portion 174 of the door is located to accommodate at least one of the hardware components; at least one panel 102 sized to fill the at least one cutout portion of the door; sealant 106 applied between the at least one panel and the at least one cutout portion; and at least one filler 104 plate having a first dimension determined based at least upon a second dimension of the at least one cutout portion of the door, wherein the at least one filler plate 104 is installed on the door to fit with the at least one cutout portion of the door. The claim is a product by process claim and the system on a door does not depend on the process of making it. The product-by-process limitation "the door is restored to an original condition by removing existing hardware" would not be expected to impart distinctive structural characteristics to the system on a door. Therefore, the claimed product is not a different and unobvious product from that of Langille.
Regarding claim 3, Langille discloses that the door comprises a fire-rated wood door (par 0035, 0066)
Regarding claim 4, Langille discloses that the at least one cutout portion 174 of the door comprises at least one of a cavity, hole and void of the door for accommodating at least one door hardware.
Regarding claim 5, Langille discloses that the at least one cutout portion of the door comprises a through hole on the door (vertical through hole defined by 174).
Regarding claim 9, Langille discloses that the at least one panel includes a rigid and non-combustible panel (102 can also be made of metal; see par 0056 and 0036).
Regarding claim 10, Langille discloses that the at least one panel has a screw-holding characteristic.
Regarding claim 11, Langille discloses that the sealant 106 is applied on a surface of the at least one cutout portion.
Regarding claim 12, Langille discloses that the sealant is sodium silicate-based (par 0013).
Regarding claim 13, Langille discloses that the at least one panel is machined to fit with the at least one cutout portion of the door.
Regarding claim 14, Langille discloses a system used on a door in order to maintain or improve a fire rating and compliance of the door, comprising: a plurality of hardware components (hinges, handles, par 0037) to replace an existing hardware of the door, wherein the door is restored to an original condition by removing the existing hardware, wherein at least one cutout portion 174 of the door is located to accommodate at least one of the hardware components; at least one panel sized 102 to fill the at least one cutout portion of the door; sealant 106 applied between the at least one panel and the at least one cutout portion; and at least one filler plate 104 installed onto the door to cover the at least one panel, wherein a first dimension of at least one filler plate is determined based upon a second dimension of at least one panel. The claim is a product by process claim and the system on a door does not depend on the process of making it. The product-by-process limitation "the door is restored to an original condition by removing existing hardware" would not be expected to impart distinctive structural characteristics to the system on a door. Therefore, the claimed product is not a different and unobvious product from that of Langille.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 2 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Langille in view of U.S. Patent No. 4,281,479 to Daus (“Daus”).
Regarding claim 2, Langille does not disclose that the door comprises a hollow metal door.
Daus discloses that doors can be made of hollow metal. It would have been obvious to one having ordinary skill in the art at the time of invention to use hollow metal, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 6, Langille does not disclose that the at least one door hardware comprises a cylindrical lockset.
Daus discloses that door hardware can comprise a cylindrical lockset (Daus; col 1 ln 66- col 2, ln 6).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the system of Langille to have the at least one door hardware comprise a cylindrical lockset taught in Daus with a reasonable expectation of success because it would provide a conventional lock set that would accommodate an end user’s need.
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Langille in view of U.S. Patent No. 6,643,991 to Moyes (“Moyes”).
Regarding claims 7 and 8, Langille does not disclose that the at least one door hardware comprises a mortise lockset or a flush bolt lock.
Moyes discloses that door hardware can comprise a mortise lockset (Moyes; col 9, ln 61-63) or a flush bolt lock (Moyes; col 3, ln 32-35).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the system of Langille to have the at least one door hardware comprise a mortise lockset or a flush bolt lock taught in Moyes with a reasonable expectation of success because it would provide a conventional lock set that would accommodate an end user’s need.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,959,332. Although the claims at issue are not identical, they are not patentably distinct from each other because each element recited in claims 1-20 are recited in and thus within the scope of the patented claims. Although the patented claims recite a fire caulk instead of sealant, it is understood in the art that a caulk and sealant are interchangeably used in the art.
Allowable Subject Matter
Claims 15-20 would be upon overcoming the double patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art, alone or in obvious combination absent hindsight, discloses applicant’s invention of a system as recited in independent claims 15, 17, and 19.
With respect to claim 15, the closest prior art to Langille does not disclose a bore through faces of the door with the panel sized to fill the bore and inserted through the bore in addition to a bore through an edge of a door filled with a second panel; wherein a sealant is applied between the first and second panels, and the first and second bores. In contrast, Langille discloses a filled cavity along an edge of the door. While a bore is present where handles are installed, the bore is not filled with a panel and sealant. Such a modification would render the handles inoperable. Claim 17 is similarly allowable in requiring a panel and sealant to fill a cut out portion through faces of the door.
With respect to claim 19, the closest prior art to Langille does not disclose at least one panel received by a bore on a top edge of the door and a first pocket on an edge of the door; a first filler plate received by a second pocket on the edge of the door; a second filler plate received by a third pocket on the top edge of the door; sealant between the at least one panel and the at least one cutout portion, wherein the at least bore of the door is filled with the at least one panel. Langille’s top edge does not also include a second filler plate received by a third pocket such that intumescent material may also flow out along the top edge to create a seal during a fire. A modification to the contrary would render the intumescent material unable to create an upper seal.
Response to Arguments
Applicant's arguments filed 02/25/2026 have been fully considered but they are not persuasive. On pages 8-10, the applicant argues that Langille does not anticipate the claimed invention because Langille discloses an intumescent material 106 instead of a sealant. The applicant argues that an intumescent material 106 is unlike applicant’s sealant 110 which, as described in applicant’s specification, a “fire-rated caulk that may include a UL certified sealant solution…to seal through-holes” and is not reactive.
To anticipate a claim, the reference must teach every element of the claim (see MPEP 2131 [R-1]). The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). Moreover, the words of a claim must be given their “plain meaning” in light of the specification (See MPEP 2111.01 [R-5]). And although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In the instant case, as noted in the rejection above, Langille discloses a system (Fig. 10-11) used on a door in order to maintain or improve a fire rating and compliance of the door, the system including a sealant 106 applied between at least one panel 102 and the at least one cutout portion 174. While Langille uses the term intumescent for the material of 106, a sealant is generally understood in the art as a substance used to block the passage of fluid through openings in materials. Langille’s material 106 can inhibit the flow of gas, a fluid, (Langille, par 0014) therefore is a sealant. There is absent language, such as requiring the sealant to be non-reactive or composed of a more specific material, that further limits what can constitute as the claimed sealant. Accordingly, the rejections of claims 1-14 are maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T CAJILIG whose telephone number is (571)272-8143. The examiner can normally be reached M-F 9am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at 571-272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTINE T CAJILIG/Primary Examiner, Art Unit 3633